The Apple Doesn’t Fall Far From the Croc

Design Patents in a New Age of Amazing Designs:
Discussion of Apple v. Samsung and Crocs v. International Trade Commission

Design patents have been front and center in the tech drama between Apple and Samsung in the ongoing effort to attract new customers and gain footing in the portable computer industry. In gaining that footing and applying design patents to the market, we can look to the precedent obtained by some comfortable shoes that likely helped Apple win its billion dollar judgment.

Design patents are not exclusive to tech or shoe companies. All types of companies can utilize design patents to help protect their products from copying. This article explores how: (i) design patents have become powerful assets to a company’s overall intellectual property strategy; (ii) a court of appeals decision regarding rubber shoes paved the way for Apple’s billion-dollar judgment; and (iii) Seattle businesses can strengthen their current intellectual property strategies through the use of design patents.

In August Samsung was found liable for copying Apple’s iPhone and iPad designs. In our previous article, Apple v Samsung Patent Infringement – What it Means for Seattle Businesses, we discussed the infringing aspects of Samsung’s product and the dividing philosophies on intellectual property protection. The case was important because it highlights how Apple’s design patents played an important role in the $1.05 billion-dollar judgment.

What is a design patent?

A design patent is a patent granted on an ornamental design having practical utility. Unlike a regular utility patent, a design patent protects non-functional parts of a product. If a company obtains a design patent, a competing product design that is substantially similar cannot be made, used, copied or imported into the United States. The competing product does not have to be an exact copy for the design patent to be infringed. The competing product only has to be substantially similar. Design patents are valid for 14 years from the date of issue and unlike utility patents there are no maintenance fees.

In Apple’s iPhone case, they could have a utility patent on the internal computer workings, but a design patent on the rounded bevel-edge iPhone casing. Apple and Crocs share a common bond because both rely heavily on industrial designs to distinguish themselves in the market. Apple used design patents to protect the iPhone’s rounded corners and bevel design. Crocs used design patents to protect the unique appearance of its rubbery shoes.

Other examples of objects that are covered by design patents include ornamental designs for shoes, jewelry, furniture, beverage containers, and computer icons. This effectively prevents competitors from making designs that look confusingly similar to your company’s products and walking off with your business.

Where the Rubber Meets the Road: Crocs™ and the use of design patents

Crocs™ are the designers of the soft, plastic, waterproof shoes commonly seen on nurses, children, and people with an interest in comfortable yet fashionable shoes. Crocs holds a design patent on the clog-like appearance of its shoes, including the arrangement of the holes at the front of the toe box.

Crocs has been using its design patents for years to keep competitors out of the market. In 2010, Crocs won an appeal that allowed it to block other plastic shoes from being imported into the United States.(1) In the Crocs decision, the court held that the test for design patent infringement is whether an experienced shopper familiar with the items would have difficulty telling the two items apart. This holding was a game changer for holders of design patents and companies looking to create similar goods. The new rule hurt imitators who, in the past, could change a small feature in the item they copied without being caught red-handed for design patent infringement.

In Crocs v. International Trade Commission, Crocs sought to enforce one of its design patents by filing a complaint with the International Trade Commission (“ITC”) accusing several companies of infringing its design patent by importing similar looking plastic clogs into the United States. Initially, the administrative judge at the ITC provided a detailed verbal claim construction of Crocs’ design patent describing, among other features, the shape of the heel strap, the connection between the strap and base, and the location and shape of the ventilation holes. This approach was found to be incorrect on appeal when the Federal Circuit took issue with the claim construction, arguing that it is dangerous to rely on detailed verbal claim constructions because focus on small features of the design distracted from the overall impression of the claimed ornamental features. In short, by using written versus visual claim construction the ITC lost sight of the forest for the trees.

In finding design patent infringement, the Federal Circuit emphasized the overall effect of the Crocs design and its impact on the ordinary observer, rather than focusing on a “checklist” of specific features. To illustrate its point, the Federal Circuit compared photos of Crocs’ products to its competitors’ products and showed that the shoes had the same overall ornamental appearance.

The court identified several elements as contributing to the “overall effect” of the Crocs design. In particular, the court found that the area where the footwear’s strap connects to the base constitutes a “focal point attracting the eye of the ordinary observer.” Also contributing to the overall effect of the design is the “visual theme of rounded curves and ellipses throughout the

design.”(3) Although the accused shoes were not exact copies of the patented Crocs design, the court found that the accused products had the same overall effect on the eye, that the designs were similar enough to cause market confusion, and held that the accused products infringed Croc’s design patent.
The case reminded judges and jurors that they must decide infringement cases based on the overall effect and impact of the appearance of a similar good on an ordinary observer, not a detailed written description of the product. This took design patent protection off the page and into the 3-D world of real life.

The Apple Doesn’t Fall Far From the Croc

Through the teaching of Crocs, Apple learned that the appearance of the overall design to the consumer is the real teeth of the design patent infringement inquiry. In the Apple case, Samsung manufactured cellular phones that were rectangular with rounded edges, nearly identical to Apple’s industry leader iPhone which also has rounded edges and a streamlined design. Knowing that consumers can be confused by shoes with rectangular instead of circular holes, it is not much of a stretch that consumers would be confused by two phones of about the same size and shape both with rounded edges.

The Court agreed finding Samsung liable for copying Apple’s iPhone and iPad rounded edge designs resulting in a $1.05 billion-dollar judgment. This case is important because it highlights how Apple’s design patents played an important role in the $1.05 billion-dollar judgment.

But this judgment would not have been possible using a written claim construction instead of considering how consumers would view the products as mandated by Crocs.

Walkaway Teachings for Seattle Tech and Other Companies

The Apple and Crocs cases teach that Seattle companies may need to look to design patents to protect their products. It is not just the technology that’s important anymore, it’s how a company makes its technology look that needs to be protected. Some general advice:

1. Protect Improvements! Consider filing design patents as well as trademarks, copyrights and utility patents on product improvements or designs. Design patents are cost effective and may provide broad protection for a company’s product. In the case of both Apple and Crocs – their innovative designs were protected along with their market share!

2. Separate “Functional” Aspects of the Design. Functional design aspects cannot be protected by design patents. Functional aspects might include aspects that would affect cost of manufacture or product quality. If there are design patents showing the functional nature of a design, this will be strong evidence that the patented elements are “functional.” Be careful in determining what is functional and what is not functional in designs.

3. Make It Look Different. If a company is going to sell a competing product design but can also give its design a “different appearance while retaining the benefit of the design” they should do so, just to be safe.

Conclusion

In a world where you are only as good as your most recent design and consumers identify and purchase goods based on the source, a company’s brand image needs to be protected. One important tool in protecting your brand against infringement is the design patent, without the need for fancy scientific analysis and utility patents. Design patents make patents accessible to most companies, not only those that excel in the technology sector. As discussed above, Crocs used design patents to protect the unique appearance of its rubbery shoes. From jewelry, to shoes, to plastic casings, Seattle businesses should consider contacting an intellectual property attorney to discuss how they might improve their intellectual property portfolio by the addition of design patents.

ABOUT COPYRIGHT COW™
Copyright Cow™ is the Blog and alter-ego-Blogger name for Timothy B. McCormack, attorney at law, a well established and successful Seattle-based intellectual property, technology and business lawyer.

Copyright Cow™ -- Defending the American Dream!

The Seattle Post intelligencer “Copyright Cow” Column focuses on the untold stories of the second largest export of the United States – intellectual property and technology – through the lenses of law, economics and society. Intellectual property is comic books, cartoon characters, the “Book of Life” embodied in the Human Genome, medicine, technology, movies, websites, and, for example, the business of producing and distributing milk (a Copyright Cow favorite).

Timothy B. McCormack, attorney at law, and Seattle based technology and copyright lawyer writes the blog to help educate and raise awareness of some of the most important economic and legal issues of our time – intellectual property. Timothy B. McCormack founded McCormack Intellectual Property Law PS